Anaheim Manufacturing Companyv.Joneca Corporation

Trademark Trial and Appeal Board

Mar 26, 2009

No. 91171906 (T.T.A.B. Mar. 26, 2009)

Mailed:
March 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Anaheim Manufacturing Company
v.
Joneca Corporation
_____

Opposition No. 91171906
to application Serial No. 78437646
filed on June 18, 2004
_____

Richard J. McKenna of Foley & Lardner LLP for Anaheim
Manufacturing Company.

Jeromye V. Sartain of Mind Law Firm, P.C. for Joneca
Corporation.
______

Before Rogers, Drost and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Joneca Corporation (“applicant”) filed an intent-to-use
application for the mark WASTEMAID and design, shown below,
for goods ultimately identified as “food waste disposers,
garbage disposers,” in Class 7.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91171906
2
Anaheim Manufacturing Company (“opposer”) filed a
notice of opposition against the registration of applicant’s
mark on the ground of priority of use and likelihood of
confusion pursuant to Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), as well as on the ground that the
application is invalid because applicant lacked the
requisite bona fide intent to use the mark in commerce when
it filed the application. Specifically, opposer alleged
that applicant was opposer’s exclusive representative
authorized to sell opposer’s WASTEMAID disposers and that
applicant was only authorized to use the WASTEMAID trademark
to sell opposer’s disposers.
At the time that Applicant filed its
application for the Applicant’s Mark, it
was aware of Opposer’s preexisting
rights in the WASTEMAID mark in view of
its longstanding business dealings with
Opposer in purchasing and reselling
WASTEMAID branded products for the
benefit of Opposer. Consequently,
applicant did not have a bona fide
intention to use the WASTEMAID mark at
the time it filed Applicant’s Mark.1

Applicant, in its answer, denied the salient
allegations in the notice of opposition.

1 Notice of opposition, ¶14.
Opposition No. 91171906
3
Preliminary Issues
A. Pleadings.
Although fraud was not a pleaded ground for opposition,
both parties, in their briefs, identified fraud as an issue
before us. Opposer framed the issue as follows:
Has the Applicant committed fraud in
filing its application for the WASTEMAID
& Design mark pursuant to Section
1(a)(3) of the Trademark Act despite
Applicant’s knowledge of Opposer’s
rights in the mark?2

Because both parties argued fraud as an issue before us, we
consider the notice of opposition amended to include fraud.
Fed.R.Civ.P. 15(b).
B. Applicant.
Edward Chavez is the co-owner and president of
applicant, as well as of EEC International, Inc., dba
Anaheim Marketing International, Inc. Mr. Chavez
effectively controls both companies. Because neither
opposer nor applicant has made any distinctions among Mr.
Chavez, applicant and EEC International, Inc. and because
they have both treated all three of them as one and the
same, we shall also treat them as one and the same.3 Thus,
evidence regarding EEC International shall be discussed as

2 Opposer’s Brief, p. 1. Applicant, on the other hand, argued
that the opposition should be dismissed because opposer cannot
prove that applicant committed fraud in acquiring rights in the
mark and filing its application. (Applicant’s Brief, p. 2).
3 Opposer’s Brief, p. 3; Applicant’s Brief, pp. 3-4.
Opposition No. 91171906
4
evidence regarding applicant, and testimony from Mr. Chavez,
whether referencing applicant or EEC International, shall
all be considered testimony regarding applicant.
C. Evidentiary Issues.
The evidence of record, as fully referenced in the
parties’ briefs, is voluminous, consisting, inter alia, of
the exhaustive testimony depositions of opposer’s president
and applicant’s president, with accompanying exhibits. The
parties have asserted many objections on various grounds and
preserved these objections in appendices attached to their
briefs. However, none of the testimony and/or exhibits
sought to be excluded is outcome determinative. Given this
fact, coupled with the number of objections, we see no
compelling reason to discuss the objections in detail.
Suffice it to say, we have considered all of the testimony
and exhibits submitted by the parties. In doing so, we have
kept in mind the various objections raised by the parties,
and we have accorded the subject testimony and exhibits
whatever probative value they merit.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, the parties introduced the
following testimony and evidence:

Opposition No. 91171906
5
A. Opposer’s evidence.
1. A notice of reliance on applicant’s responses to
Interrogatory Nos. 1, 4, 7, 12, 13 and 17, and on
applicant’s responses to opposer’s requests for admission
Nos. 10, 11, 13, 14, 16, 17, 19 and 20; and,
2. The testimony deposition of Thomas P. Dugan,
opposer’s president, with attached exhibits.
B. Applicant’s evidence.
1. A notice of reliance on opposer’s responses to
applicant’s interrogatory Nos. 8 and 10, and opposer’s
responses to applicant’s requests for admission Nos. 11, 13,
27 and 32;
2. The testimony deposition upon written questions of
Stuart Anthony Wynbourne, Chairman and Managing Director of
Wilec Limited, with attached exhibits;4
3. The testimony deposition of Edward Chavez,
applicant’s president, with attached exhibits; and,
4. A stipulation authenticating and introducing into
evidence specific documents produced by opposer during
discovery.
Standing
First, it is necessary to determine whether opposer has
standing to bring this opposition proceeding. An opposer

4 As more fully discussed infra, Wilec Ltd. was for a time a
wholesaler of, among other things, waste disposal units, in the
United Kingdom and Europe.
Opposition No. 91171906
6
must have “a ‘real interest’ in the outcome of a proceeding
in order to have standing.” Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). “To establish
a reasonable basis for a belief that one is damaged by the
registration sought to be cancelled, a petition may assert a
likelihood of confusion which is not wholly without merit….”
Lipton Industries v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). The evidence, discussed more
fully below, establishes that opposer has a real commercial
interest in this proceeding.
Facts
Opposer is a manufacturer and distributor of food waste
disposers and hot water dispensers.5 Opposer is also an
original equipment manufacturer of garbage disposers for
other companies.6 Applicant assisted opposer in selling
four or five different sets of disposer models to private
label customers.7
Q. Now, for those brands that were not
owned by [opposer] . . . how were
those original equipment
requirements or specifications made
known to the factory, to [opposer]?

A. The thing we would do is we would
negotiate with the OEM customer
what models he wanted to buy.
There was (sic) basically four or
five different set models.

5 Dugan Dep., p. 14
6 Dugan Dep., p. 114.
7 Chavez Dep., p. 20.
Opposition No. 91171906
7
* * *

And once the customer decided,
“Okay, I want a PM-2,” . . . then
we would say, okay, these are all
the typical attributes of a typical
model. They would agree to that.

And then we would decide on the
labeling characteristics. Of
course, the customer always had
their input into that. But we
would design a label for them, for
their approval.

And once they approved the label
for either disposers and/or the
packaging, then we would present
that program to [opposer] and say,
“This is what the customer wants.”
Or, in the case it is our brand,
“This is what we want.” Of course,
we are always the one buying it,
anyway, so it is, “This is what we
want. This model with this
label.”8

Prior to 1990, Overseas Operations Inc. was an
international sales representative for opposer.9 From
approximately, 1985 through 2005, applicant was opposer’s
exclusive international representative for food waste
disposers for areas outside of North America, except for the
U.K. which was the responsibility of Overseas Operations

8 Chavez Dep., pp. 20-21. Mr. Wynbourne confirmed that Wilec
Ltd. never bought direct from opposer. “I don’t believe Wilec
ever purchased directly from [opposer]. It purchased originally
through Overseas Operations and more recently through
[applicant]” (Wynbourne Dep., p. 26). See also Wynbourne Dep.,
p. 17.
9 Chavez Dep., p. 32.
Opposition No. 91171906
8
Inc.10 After 2005, applicant became a nonexclusive
representative for opposer.11 Applicant also sells
disposers to “importer distributors or to [applicant’s] own
operations.”12 In fact, after applicant arranges to sell
disposers to a customer as opposer’s representative,
applicant purchases the disposers from opposer as a
distributor and then resells them to the customers.13
Q. So you are saying you were acting
as a representative for [opposer]
and a distributor of [opposer] at
the same time?

A. That’s correct.14

From approximately 1978 to 2000, Wilec Ltd. was a
wholesaler of waste disposal units in the United Kingdom and
Europe.15 In the mid-1980s, Wilec adopted the trademark
WASTEMAID for waste disposer units it ordered for resale.16
Michael Thresher, the chief designer at Michael Stewart
Designs created the WASTEMAID logo for Wilec Ltd.17 The

10 Dugan Dep., pp. 16, 18, 19, Opposer’s Exhibits 1 and 2. The
parties memorialized their relationship in three agreements
discussed later in this decision.
11 Dugan Dep., p. 18; Opposer’s Exhibit 3.
12 Chavez Dep., p. 29.
13 Chavez Dep., pp. 159-160, 162-163.
14 Chavez Dep., p. 160.
15 Wynbourne Dep., pp. 5-6; Chavez Dep., p. 33.
16 Wynbourne Dep., pp. 11-12, 16, 38. Opposer proffered no
testimony regarding the creation or selection of the WASTEMAID
mark. Mr. Dugan testified that he had no knowledge regarding the
origin of the mark. (Dugan Dep., p. 128).
17 Wynbourne Dep., p. 11.
Opposition No. 91171906
9
WASTEMAID logo designed by Michael Stewart Designs for Wilec
Ltd. is the mark at issue in this opposition.18
After adopting the trademark and having the WASTEMAID
logo designed for it, Wilec contracted with opposer for
opposer “to produce a range of waste disposal units for
[Wilec] to market in the U.K.” using the WASTEMAID
trademark.19
After [opposer] agreed in principle to
manufacture for Wilec Limited, I and my
wife flew to Anaheim in California and
met with Tom Dugan20 . . . and showed
him all the designs, logos, marketing
plans, proposed leaflets, for the WASTE
MAID name. He agreed on behalf of
[opposer] to produce disposers for Wilec
using the Wilec registered trade name
WASTEMAID.21

Wilec Ltd. started using the WASTEMAID and Design
trademark to identify its garbage disposers sold in the
United Kingdom and Europe in the middle 1980s.22 Opposer
was an original equipment manufacturer for Wilec’s WASTEMAID
disposers.23 Until Wilec Ltd. sold the WASTEMAID trademark
to applicant, which we discuss in more detail infra, Wilec
Ltd. claimed ownership of the WASTEMAID trademark.24 Mr.
Chavez testified that Wilec Limited “owned the waste name

18 Wynbourne Dep., Applicant’s Exhibit 1.
19 Wynbourne Dep., p. 12.
20 This is Thomas P. Dugan’s father. Tom Dugan preceded Thomas P.
Dugan as opposer’s president.
21 Wynbourne Dep., p. 20. Wilec had registered the WASTEMAID
trademark in the United Kingdom
22 Wynbourne Dep., p. 16.
23 Wynbourne Dep., p. 25.
24 Wynbourne Dep., pp. 21-22
Opposition No. 91171906
10
(sic)” and “developed the WasteMaid brand.”25 Nevertheless,
Overseas Operations registered WASTEMAID and Design, shown
below, in the United States for “kitchen waste disposers.”26

Moreover, Overseas Operations also owned WASTEMAID
registrations in Canada, Australia, and New Zealand.27
However, Mr. Chavez testified that he had been active in
those markets since the 1980’s and that he did not recall
encountering sales of WASTEMAID branded products by any
other company.28
Opposer originally supplied Wilec Ltd. with disposers
through opposer’s exporter, Overseas Operations.29 Overseas
Operations limited the sales of WASTEMAID disposers by Wilec
to the U.K.30 From the mid-1980’s through 2000, Wilec sold

25 Chavez Dep., pp. 30-31.
26 Registration No. 1772208, issued May 18, 1993; Sections 8 and
15 affidavits accepted and acknowledged; expired. The
registration was cited as a Section 2(d) bar to applicant’s
application. The registration was made of record as part of the
application file. Trademark Rule 2.122(b)(1) (“The file of each
application . . . against which a notice of opposition is filed .
. . forms part of the record of the proceeding without any action
by the parties and reference may be made to the file for any
relevant and competent purpose”).
27 Chavez Dep., Exhibits 5, 6 and 7.
28 Chavez Dep., p. 305.
29 Wynbourne Dep., p. 17; Chavez Dep., p. 31-32.
30 Wynbourne Dep., p. 51 (“When [opposer] originally manufactured
disposers for us, for Wilec, sorry, we were only allowed under
the agreement to sell these disposers in the UK, this agreement
being between Overseas Operations and Wilec. Once we were having
our disposers manufactured by Watertown, we started selling in
Europe and built up an interesting business”); Chavez Dep., p.
31-32.
Opposition No. 91171906
11
waste disposal units in the U.K. bearing the WASTEMAID
logo.31
Thomas Dugan, opposer’s President, testified that it
has been opposer’s practice for more than 30 years to place
a serial number tag label on the bottom of all of opposer’s
disposer’s that display, inter alia, the model, date of
manufacture, voltage, the name of the manufacturer and “any
trademark that we have on the product.”32 A representative
serial number tag displaying WASTEMAID is shown below.

In addition, the packaging in which opposer placed
WASTEMAID disposers sold to applicant displayed opposer’s
company logo (i.e., an AMC logo).33 Opposer’s logo appeared
in the lower corner of the packaging as shown below.

31 Wynbourne Dep., p. 16.
32 Dugan Dep., pp. 55-58, 62-63, Opposer’s Exhibit 27. However,
Mr. Dugan has only been with opposer since 1994. (Dugan Dep.,
pp. 11-12, 56, 58).
33 Dugan Dep., pp. 60-61, 63; Opposer’s Exhibit 29.
Opposition No. 91171906
12

However, Stuart Wynbourne testified that the ratings
label on the disposer units should have identified Wilec,
not opposer. “If any labels were produced with the
[opposer’s name], it was done without the agreement of Wilec
Limited.”34 Nevertheless, Mr. Dugan maintained that
opposer’s name appears on the ratings labels for products
sold outside of the United States, even for private label
disposers.35
Q. Do you have rating labels that
you’ve prepared and used on General
Electric products?

A. Do we have ratings labels we’ve
created on General Electric
products?

Q. Uh-huh.

A. Yes.

Q. Did they bear the BEAB
certificate,36 if it’s a product

34 Wynbourne Dep., p. 24.
35 Dugan Dep., pp. 121-123.
36 “[T]he BEAB is a particular approval that is required for
certain countries. [The testing agency] tell us what the test
procedure is in order to qualify for BEAB, and we submit our
product to that agency for testing in order to acquire the BEAB
label.” (Dugan Dep., p. 120).
Opposition No. 91171906
13
being sold in to (sic) a country
requiring that?

A. If we know they are specifically
going there, yes, it would.

Q. Would your name, the name Anaheim
Manufacturing, in any form be on
that rating label - -

A. As far as I know, yes.37

* * *

Q. Do private label disposers bear a
rating label that would typically
have your name, Anaheim
Manufacturing, in some form on that
rating label?

A. In the majority of cases, yes.38

* * *

Q. So I was just making clear that we
are talking about a product that
bears a private label, someone
else’s brand, and at the same time
has your name, Anaheim
Manufacturing, on the rating label.

A. Like I said, in most of the cases,
to my knowledge, the disposers that
are sold outside of the United
States have our name on it, the
rating label.39

Wilec Ltd.’s name appeared in advertising for the
WASTEMAID disposers it sold, but there is nothing in the

37 Dugan Dep., p. 121.
38 Dugan Dep., p. 122.
39 Dugan Dep., p. 123.
Opposition No. 91171906
14
record displaying Wilec’s name actually appearing on the
WASTEMAID branded disposers.40
Throughout the 1990’s, Wilec purchased WASTEMAID
disposers from Watertown Metal Company located in
Wisconsin.41 “This was done with the full knowledge of
[opposer] and at no time throughout the ten-year
relationship with Watertown Metal did [opposer] ever object
to Wilec continuing to use the registered name WASTEMAID.”42
During this time period, Wilec Ltd. was also selling other
WasteMaid products such as commercial disposers and disposer
accessories.43 Despite this open and notorious use of the
WASTEMAID mark by Wilec Ltd., “[a]t no time did [opposer]
ever represent to Wilec that [opposer] had any ownership
interest in the WASTE MAID trademark.”44 When Watertown
Metal Company began supplying the WASTEMAID disposers to
Wilec, Wilec expanded its sales of WASTEMAID disposers

40 Wynbourne Dep., Exhibits 1-3. While Wynbourne Exhibit 2
appears to be a photocopy of a package, it was not identified and
it was for a waste disposer tool, not a waste disposer.
Applicant originally had the WASTEMAID disposer tool manufactured
by a company in Riverside, California, and then by a company in
China. (Chavez Dep., p. 35).
41 Wynbourne Dep., pp. 18, 54; Chavez Dep., pp. 32, 34. When
Overseas Operations and Wilec began buying product from Watertown
Metal Company, opposer gave applicant the U.K. sales territory.
(Chavez Dep., p. 32).
42 Wynbourne Dep., pp. 38-39, 54, Opposer’s Exhibit 1 (May 12,
2000 fax to opposer from Wilec Ltd. stating that Wilec was
interested in having its disposers manufactured by opposer rather
than Watertown Metal Company); Dugan Dep., Opposer’s Exhibit 6.
43 Chavez Dep., p. 33.
44 Wynbourne Dep., p. 21. As note above, Overseas Operations, not
opposer, owned a federal registration for the WASTEMAID and
Design trademark.
Opposition No. 91171906
15
throughout Europe.45 From the 1990’s through 2000, Wilec
sold waste disposal units throughout Europe bearing the
WASTEMAID logo.46 Even though Wilec Ltd. was purchasing
continuous feed WASTEMAID disposers from Watertown Metal
Company, it also purchased WASTEMAID batch feed disposers
from applicant.47
Despite the fact that applicant knew that Wilec Ltd.
had developed the WASTEMAID brand in Europe, Mr. Chavez
assisted opposer in registering the WASTEMAID trademark in
countries where Wilec Ltd. had not registered the mark.48
In fact, in 1992, Mr. Chavez advised opposer that Wastemaid
[Wilec Limited] was expanding internationally and advised
opposer to register the WASTEMAID mark in Australia, New
Zealand, Japan, and Korea.49 Subsequently, in 1996, Mr.
Chavez inquired of opposer regarding the status of the
WASTEMAID trademark registration in Turkey.50 Finally, in
2003, Chavez, as President of applicant, submitted a
declaration supporting the renewal of opposer’s Portuguese
registration stating that “we represent and sell in Portugal
the products covered by Portuguese Trademark No. 277.784
‘Wastemaid’.”51 As a result of these efforts in which

45 Wynbourne Dep., p. 51.
46 Wynbourne Dep., p. 51.
47 Wynbourne Dep., p. 17; Chavez Dep., pp. 32-33.
48 Dugan Dep., p. 53.
49 Dugan Dep., Opposer’s Exhibit 24.
50 Dugan Dep., Opposer’s Exhibit 25.
51 Dugan Dep., Opposer’s Exhibit 53; Chavez Dep., p. 285.
Opposition No. 91171906
16
applicant assisted, opposer registered WASTE MAID (without
the design) in Ireland, Denmark, Italy, Norway, Finland,
Greece, Germany, Portugal, Turkey and Sweden and also
obtained European Union and Benelux registrations. 52
However, prior to the November 2000 acquisition of the
WASTEMAID trademark by applicant, neither opposer, nor
applicant, sold any WASTEMAID branded disposers except
through Wilec Ltd.53
In 1997, Wilec Ltd. wrote to applicant regarding
Wilec’s application to register the WASTEMAID mark in
Turkey. Wilec’s application was blocked by opposer’s
registration. Wilec Ltd. asked Mr. Chavez to intervene on
behalf of Wilec Ltd.54 Mr. Chavez suggested to opposer that
it assign its WASTE MAID registration in Turkey to Wilec
Ltd. as a business development effort.55 In response,
opposer inquired of applicant whether there was anything
else that could be gained from its other WASTEMAID
registrations.56
In May 2000, Wilec Ltd. contacted opposer to discuss
whether opposer would renew its original equipment
manufacturing relationship with Wilec.57 Opposer sent a

52 Dugan Dep., pp. 14-52; Opposer’s Exhibits 14-23.
53 Chavez Dep., pp. 338-341.
54 Chavez Dep., Opposer’s Exhibit 40.
55 Chavez Dep., p. 279, Applicant’s Exhibit 38.
56 Dugan Dep., Opposer’s Exhibit 49.
57 Wynbourne Dep., pp. 42-47; Opposer’s Exhibit 1 (a fax from
Stuart Wynbourne to Thomas A. Dugan).
Opposition No. 91171906
17
copy of Wilec’s communication to Mr. Chavez, applicant’s
President.58 After Wilec’s initial contact, Mr. Chavez
began negotiating with Wilec on behalf of opposer.59
“Whenever [opposer] would receive an inquiry from a
potential customer located outside of the U.S., that inquiry
was directed to [applicant] as its international
representative.”60
After an agreement could not be reached, Wilec Ltd.
“chose to approach Ed Chavez of [applicant] to see if he was
interested in purchasing, besides other things, the
registered trade name. This he did, and the registered
trademark [WASTEMAID] then passed to [applicant].”61 In
November 2000, Wilec Ltd. assigned “the ownership of the
rights to and use of the name WasteMaid in Europe” . . .

58 Dugan Dep., Opposer’s Exhibit 45.
59 Wynbourne Dep., pp. 48-53; Opposer’s Exhibit 2.
60 Opposer’s response to Interrogatory No. 10; Dugan Dep., p. 168.
Applicant was opposer’s exclusive representative for products
sold under the WASTEMAID mark outside of the U.S. Id. In fact,
applicant attended trade shows with opposer in order to field
questions regarding international sales. (Dugan Dep., pp. 37,
40-41; Opposer’s Exhibit 7).
61 Wynbourne Dep., p. 54. On the other hand, opposer contends
that this was a breach of applicant’s contractual obligation to
“diligently and actively pursue the business interests of
[oppposer].” (1993 and 2002 agreements, ¶6). However, the facts
developed on this record establish that Wilec Ltd. approached Mr.
Chavez regarding the purchase of the WASTEMAID product line only
after Wilec could not reach an agreement with opposer. There is
no testimony or evidence that Mr. Chavez approached Wilec, Ltd.
or that applicant undermined the negotiations with Wilec Ltd. in
order to buy the mark for itself. Accordingly, there is no basis
to conclude that applicant breached any duty to opposer.
Opposition No. 91171906
18
“and the shares and the ownership of the company WasteMaid
U.K. to [applicant].”62
Mr. Chavez testified that he notified opposer that
applicant acquired the WASTEMAID trademark, after completing
the WASTEMAID acquisition.63
I informed them that we had bought the
WasteMaid program from Wilec, that we
were taking over the WasteMaid brand
name and all - - the entire program for
the European Market.64

However, Mr. Chavez subsequently explained that he did not
expressly discuss the ownership of the WASTEMAID trademark
with opposer.
Q. Any other conversations since, with
the representatives of [opposer],
regarding your ownership of the
WasteMaid trademark?

A. Regarding ownership of the
WasteMaid trademark?

Q. Yes.
A. Not specific conversation regarding
ownership of the WasteMaid
trademark, no.65

After acquiring the WASTEMAID trademark, applicant sent
a communication to opposer reporting that “we have signed an
agreement with Mr. Wynbourne that secures all the UK and

62 Wynbourne Dep., pp. 16 and 32, Applicant’s Exhibit 4; Chavez
Dep., pp. 36-38, Applicant’s Exhibit 2.
63 Chavez Dep., pp. 61-62.
64 Chavez Dep., pp. 61-62.
65 Chavez Dep., p. 88.
Opposition No. 91171906
19
Continental European business for the WasteMaid line (sic)
will be supplied by [applicant].”66
In a subsequent communication, applicant reiterated
that “we were successful in reaching an agreement with Tony
Wynbourne that will allow [applicant] to be the sole
supplier of the WasteMaid Brand disposers.” In addition,
applicant selected six of opposer’s models for the WASTEMAID
line and switched the color from red to blue, and assumed
responsibility for designing the disposer and carton
labels.67 Applicant intended to have opposer manufacture
the WASTEMAID disposers as a private label brand for
applicant. Finally, applicant asked opposer to review a
website promoting the “Anaheim Disposer version of
WasteMaid.”68
Prior to November 2000, opposer’s only customer for the
WASTEMAID disposers was Wilec Ltd.69 Applicant is the only
distributor to whom Opposer has ever sold a WASTEMAID
disposer.70 In fact, opposer “has sold virtually all of its

66 Dugan Dep., Opposer’s Exhibit 47 (November 13, 2000
communication).
67 Dugan Dep., Opposer’s Exhibit 48 (November 27, 2000
communication); Chavez Dep., pp. 62-63, Applicant’s Exhibit 19.
68 Dugan Dep., Opposer’s Exhibit 50 (a second November 27, 2000
communication); Chavez Dep., pp. 62-63, Applicant’s Exhibit 19.
Applicant used Anaheim Marketing International, Inc. as a “dba,”
so the above-noted reference could refer to applicant, opposer or
both.
69 Chavez Dep., pp. 112-113, 339-341.
70 Opposer’s response to Request to Admit No. 13; Dugan Dep., pp.
141-142.
Opposition No. 91171906
20
products under [the WASTEMAID mark] to Applicant.”71
Opposer did not identify any customer other than applicant
who bought WASTEMAID branded disposers. All of the
WASTEMAID disposers sold to applicant were exported and sold
outside of the United States.72 There is no evidence that
opposer ever advertised or promoted the WASTEMAID brand.73
Applicant began promoting the WASTEMAID disposer in the
United States in 2004.74 Applicant promotes the WASTEMAID
disposer in the United States through trade shows, websites,
consumer and trade magazines, brochures and promotional
products such as refrigerator magnets, pocket knives, and
air fresheners.75 Applicant made its first shipment of
WASTEMAID disposers in the United States on October 6, 2005
and dated the invoice as of October 12, 2005.76 From Spring
2004 through January 2006, applicant purchased WASTEMAID
disposers from opposer, as well as manufacturers other than
opposer.77 According to Mr. Chavez, opposer was aware that
applicant was purchasing disposers from other
manufacturers.78

71 Opposer’s response to Interrogatory No. 8.
72 Dugan Dep., p. 164.
73 Thomas Dugan was unaware of any advertising. (Dugan Dep., p.
140).
74 Chavez Dep., pp. 89-90, 99, 107-108, 127.
75 Chavez Dep., pp. 89-90, 92, 98-99, Applicant’s Exhibits 26 and
31.
76 Chavez Dep., p. 129, Applicant’s Exhibit 39, Doc. No. 1971.
77 Chavez Dep., p. 111.
78 Chavez Dep., p. 111.
Opposition No. 91171906
21
Fraud
Fraud in the procurement of a trademark registration
occurs when an applicant knowingly makes a false
representation of a material fact in an attempt to obtain a
registration to which it is not otherwise entitled. See
Torres v. Cantine Torresella S.r.l, 808 F.2d 46, 1 USPQ2d
1483, 1484 (Fed. Cir. 1986); Medinol Ltd. v. Neuro Vasx
Inc., 67 USPQ2d 1205 (TTAB 2003). See also, Mister Leonard
Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064, 1065
(TTAB 1992) (“[T]o constitute fraud on the PTO, the
statement must be (1) false, (2) a material representation
and (3) made knowingly.”) Fraud must be proven with clear
and convincing evidence (“to the hilt”), and any doubt must
be resolved against a finding of fraud. See Giant Food,
Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 962 (TTAB
1986); Smith International, Inc. v. Olin Corporation, 209
USPQ 1033 (TTAB 1981). Fraud will not lie if it can be
proven that the statement, though false, was made with a
reasonable and honest belief that it was true. See
Woodstock's Enterprises Inc. (California) v. Woodstock's
Enterprises Inc. (Oregon), 43 USPQ2d 1440, 1443-1444 (TTAB
1997).
Opposer contends that applicant committed fraud on the
Patent and Trademark Office by claiming ownership of the
WASATEMAID and Design mark when applicant knew that opposer
Opposition No. 91171906
22
was the owner of the mark. The essence of opposer’s fraud
claim is that applicant knew that any use of the mark by
applicant inured to the benefit of opposer.
We conclude, however, that applicant did not commit
fraud when it filed its application because applicant
believed that it was the owner of the mark. Based on
applicant’s experience as opposer’s sales representative and
a distributor, applicant viewed opposer as a private label
supplier of the WASTEMAID and Design garbage disposers for
Wilec Ltd. The fact that Watertown Metal Company sold
WASTEMAID branded garbage disposers to Wilec Ltd. throughout
the 1990’s supports applicant’s belief that that opposer was
one of at least two private label suppliers of garbage
disposers. Moreover, opposer only sold WASTEMAID branded
disposers to Wilec Ltd. through Overseas Operations and
applicant. There were no other customers for that brand.
When Wilec Ltd. assigned its rights to the mark in Europe to
applicant, applicant believed that it had lawfully acquired
Wilec’s trademark rights in Europe, and that opposer had
become applicant’s private label supplier of WASTEMAID and
Design garbage disposers. Accordingly, applicant was never
aware that opposer asserted ownership of the WASTEMAID and
Design mark.
Applicant also believed that the WASTEMAID and Design
mark was available for use and registration in the United
Opposition No. 91171906
23
States. Applicant and opposer had raced to register the
WASTEMAID mark in foreign countries where they anticipated
that Wilec Ltd. would try to sell the brand to gain a
commercial advantage over Wilec (e.g., Turkey) even though
opposer and applicant never sold WASTEMAID disposers to any
company other than Wilec. There is no explanation why
opposer, with applicant’s assistance, registered the mark in
other countries when opposer did not have any apparent
intent to use the mark in those countries other than to sell
to Wilec. Because opposer and applicant were knowledgeable
and sophisticated enough to try and register the trademark
in countries where they anticipated that Wilec might do
business, we find it inconceivable that they did not know
that Overseas Operations had registered the mark in the
United States, as well as Canada, Australia, and New
Zealand. Subsequently, in 2003, when Overseas Operations
did not file a declaration of continued use under Section 8
of the Trademark Act and a renewal application under Section
9 of the Trademark Act, applicant could have believed that
it could claim ownership of the mark in the United States,
and, on June 18, 2004, it filed the intent-to-use
application at issue.
We find that applicant believed that Overseas
Operations had the prior rights to use the WASTEMAID and
Design mark in the United States by virtue of its federal
Opposition No. 91171906
24
registration, that opposer did not have ownership rights to
the WASTEMAID and Design mark because opposer was the
private label suppler of those products to Wilec Ltd., and
that as the successor-in-interest to Wilec Ltd., applicant
could rightfully assert its belief that it was the owner of
the mark and that it was entitled to register it. In view
of the foregoing, applicant did not knowingly make a false
statement when it filed its application.
Applicant’s Bona Fide Intent To Use The Mark
At the time applicant filed its application, it had
approximately 20 years in the garbage disposer business as a
sales representative for opposer and a distributor of
disposers. As indicated above, applicant had a reasonable
belief that it was entitled to register the mark when the
Overseas Operations’ registration expired because applicant
believed that it had acquired the rights to use and register
the WASTEMAID and Design trademark from Wilec Ltd.
Applicant did not believe that opposer had any ownership
rights in the mark because opposer was the private label
supplier, and it had never independently sold WASTEMAID and
Design garbage disposers in the United States or elsewhere.
Because the market appeared to be open, introducing the
WASTEMAID brand in the United States made business sense.
Opposer argues, to the contrary, that applicant could
not have had a bona fide intent to use the WASTEMAID mark
Opposition No. 91171906
25
when it filed its application (June 2004) because pursuant
to the 1993 and 2002 representation agreements, applicant
was obligated to act on behalf of opposer. According to
opposer, applicant’s acquisition of the WASTEMAID and Design
mark from Wilec Ltd. was a breach of applicant’s duty to
diligently and actively pursue the business interest of
opposer pursuant to Paragraph No. 6 of the agreements. As
evidence of applicant’s bad faith, opposer argues that
applicant concealed the true nature of applicant’s
acquisition from opposer (i.e., opposer was unaware of
applicant’s attempt to acquire the WASTEMAID trademark on
its own behalf until applicant’s mark was published for
opposition). Finally, opposer argues that the 1993 and 2002
representation agreements “constitute a contractual bar” to
applicant’s application because the agreements required
applicant to act for the benefit of opposer. According to
opposer, applicant acted on its own behalf, not opposer’s
behalf, when it acquired the WASTEMAID mark from Wilec Ltd.
and then filed its application in the United States.79
There are several problems with opposer’s argument.
First, it is based on the false premise that opposer was the
first party to use the WASTEMAID trademark.80 As indicated
above, we found that opposer was an original equipment

79 Opposer’s Brief, pp. 18-22.
80 Priority of use is discussed in the next section of the
decision.
Opposition No. 91171906
26
manufacturer for Wilec Ltd., and that opposer placed the
WASTEMAID trademark on the garbage disposers for Wilec Ltd.
at Wilec’s direction. This private label relationship with
Wilec Ltd. began in the mid-1980’s and continued until
applicant acquired Wilec’s trademark rights in November
2000. Thus, opposer’s status as a private label supplier
for Wilec Ltd. preceded the 1993 and 2002 agreements. Any
obligation of applicant to act on opposer’s behalf
necessarily required applicant to represent opposer in
selling opposer’s brands or in selling opposer’s disposer
models as private label supplier, not as the owner of the
WASTEMAID and Design trademark.
Second, even if applicant’s acquisition of the
WASTEMAID and Design mark from Wilec and its sales of
disposers on its own behalf constitute a breach of 1993 and
2002 representative agreements, we do not find that
applicant did not have a bona fide intent to use the
WASTEMAID and Design trademark. Paragraph No. 3 of the
agreements provides that applicant will “refrain from
representing equipment and material that might be in
conflict with products manufactured by [opposer].” Although
applicant’s purchase of disposers from Chinese manufacturers
from Spring 2004 through April 1, 2005 (the effective date
of the third agreement) could constitute a breach of the
2002 agreement, it is not apparent how establishes that
Opposition No. 91171906
27
applicant’s intent to use the mark was not a bona fide
intent.
Paragraph No. 6 of the agreements provides that
applicant will “diligently and actively pursue the business
interests of [opposer] . . . including, but not limited to
calling on distributors, retailers, direct sales companies,
construction companies, plumbing wholesalers and merchants.
[Applicant] also agrees to make dealer calls at the
direction of [opposer].” While applicant’s acquisition of
the WASTEMAID and Design trademark could make applicant and
opposer competitors and thereby hinder applicant’s ability
to pursue the business interests of opposer, we do not find
that a violation of that provision means that applicant did
not have a bona fide intent to use the mark on its own. It
simply means that when applicant sold WASTEMAID and Design
garbage disposers on its own behalf, it may have violated
the terms of the agreement with opposer.81
Finally, the way that applicant reported to opposer its
transaction with Wilec, Ltd. is troublesome, but it does not
invalidate its position as the successor-in-interest of
Wilec Ltd. Applicant was less than candid in explaining

81 In fact, after applicant acquired the WASTEMAID trademark, it
continued to buy garbage disposers from opposer. (Chavez Dep.,
p. 331). The record shows that applicant intended to revive the
WASTEMAID brand throughout Europe, and opposer was going to be
the manufacturer of the disposers. Instead of reselling the
disposers to Wilec Ltd. for subsequent distribution, applicant
was simply buying the disposers to distribute itself.
Opposition No. 91171906
28
that it had secured the exclusive rights to sell WASTEMAID
garbage disposers in Europe from Wilec Ltd. because
applicant did not add that it had acquired ownership of the
trademark. On the other hand, opposer never inquired about
the status of the trademark. This is very odd considering
that opposer had registered the trademark in a number of
foreign countries. Moreover, when Wilec Ltd. found that it
could not register the mark in Turkey because of opposer’s
registration, applicant advised opposer to transfer the
Turkish registration to Wilec as a business development
effort. Opposer then inquired whether they could somehow
leverage opposer’s other registrations to opposer’s
advantage. Under these circumstances, opposer’s contention
that it has somehow been duped by applicant is just not
credible. Even if that contention were credible, it does
not undercut applicant’s bona fide intent to use the
WASTEMAID and Design mark.
Upon careful consideration of the record, we find that
applicant had a bona fide intent to use the mark in the
United States.
Priority of Use and Likelihood of Confusion
A. Applicant’s priority date.
On June 18, 2004, applicant filed the intent-to-use
application at issue. Pursuant to Section 7(c) of the
Trademark Act of 1946, 15 U.S.C. §1057(c), contingent on the
Opposition No. 91171906
29
registration of applicant’s mark, the filing date of its
application (June 18, 2004) constitutes constructive use
conferring a right of priority except against one who has
used the mark prior to the filing date of the application.
Accordingly, applicant’s priority date is June 18, 2004.
B. Opposer’s priority date.
Having alleged priority of use and likelihood of
confusion, “opposer must prove that he has proprietary
rights in the term he relies upon to demonstrate likelihood
of confusion as to source, whether by ownership of a
registration, prior use of a technical ‘trademark,’ . . . or
whatever other type of use may have developed a trade
identity.” Otto Roth & Co., Inc. v. Universal Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).
The record shows that Overseas Operations filed an
application to register WASTEMAID and Design on August 12,
1991. The registration issued on May 18, 1993, but expired
because Overseas Operations did not file a Section 8
declaration of continued use and a Section 9 renewal
application. This opened the door for applicant to file the
application at issue. Opposer’s failure to explain why it
did not register the WASTEMAID and Design mark in the United
States and why Overseas Operations had registered the mark
instead of opposer undercuts opposer’s claim that its early
use of the mark was anything other than a private placement
Opposition No. 91171906
30
application of a trademark owned by Wilec Ltd. (or perhaps
Overseas Operations, the owner of the registration). Under
these circumstances, opposer’s private placement application
of the mark on products sold to Wilec did not develop a
trade identity for opposer.
Nevertheless, priority is a function of prior use of a
mark in connection with particular goods. Thus, in any case
involving the ownership of a particular mark or priority
thereto, the right to the exclusive use of the mark accrues
to the party who first used the mark in trade. “However,
the use of a mark necessary to bestow a proprietary right in
and to a trademark must be an ‘open and notorious’ use,
reaching to purchasers or prospective purchasers of the
goods in which the mark is claimed for use.” La Maur Inc.
v. International Pharmaceutical Corp., 199 USPQ 612, 616
(TTAB 1978).
Opposer argues that since at least as early as 1994, it
acquired rights in the WASTEMAID trademark by manufacturing
garbage disposers with a serial number tag “which expressly
included the WASTEMAID mark82 and identified [opposer] as
the manufacturer of the product.”83 Opposer also placed the
WASTEMAID and Design mark on product packaging and that the

82 The serial number tag featured WASTEMAID as a word mark, not in
the logo format at issue in this proceeding.
83 Opposer’s Brief, p. 13.
Opposition No. 91171906
31
packaging identified opposer as the manufacturer.84 No
other names appeared on the products or the packaging.
Accordingly, opposer contends that it has manufactured,
promoted and transported WASTEMAID branded garbage disposers
in the United States prior to the filing date of applicant’s
application.85
Opposer further explains that applicant cannot claim
rights in the WASTEMAID and Design mark because applicant’s
sales of those products were governed by the 1993 and 2002
representation agreements, and therefore any trademark
rights that applicant claims inure to the benefit of
opposer.86 To support this contention, opposer relies on
the contractual provisions of the representation agreements
providing that applicant earns commissions on non-OEM
(original equipment manufacturer) and that because opposer
paid applicant commissions for sales of WASTEMAID branded
products, the WASTEMAID trademark must have been owned by
opposer.87
When we look at the evidence as a whole, we find that
applicant was a private label supplier of WASTEMAID and
Design garbage disposers, who placed the WASTEMAID and
Design mark on the products at the direction of its

84 Opposer’s Brief, p. 13.
85 Opposer’s Brief, pp. 14-15.
86 Opposer’s Brief, pp. 15-18.
87 Opposer’s Brief, pp. 16-18.
Opposition No. 91171906
32
customers. The evidence does not support opposer’s
contention that the WASTEMAID and Design mark identifies
opposer as the source of the garbage disposers. We base our
findings on the facts set forth below:
1. Wilec Ltd. was the first company to adopt the
WASTEMAID mark, and Wilec had the WASTEMAID logo designed
for it. Opposer presented no testimony regarding its
selection and adoption the WASTEMAID word or design mark.
2. Wilec Ltd. contracted with opposer to place
Wilec’s WASTEMAID and Design mark on specified garbage
disposer models manufactured by opposer. In other words,
opposer was a private label supplier. The testimony
regarding opposer’s use of the WASTEMAID and Design mark
establishes that opposer was an original equipment
manufacturer for Wilec Ltd. and, after the transaction
between Wilec and applicant, for applicant.
3. In the 1990’s Wilec Ltd. openly purchased
WASTEMAID branded products from Watertown Metal Company
located in Wisconsin. Applicant was aware that Watertown
Metal Company was a private label supplier of WASTEMAID and
Design garbage disposers for Wilec Ltd. because applicant
was competing with Watertown Metal Company, on behalf of
opposer, to sell Wilec WASTEMAID and Design branded
products. Opposer lodged no objection to Watertown Metal
Company acting as a private label supplier of WASTEMAID
Opposition No. 91171906
33
branded garbage disposers. Opposer offered no testimony
regarding the actions of Watertown Metal Company in selling
WASTEMAID branded products. Opposer’s competition with
Watertown Metal Company to sell garbage disposers to Wilec
Ltd. indicates that opposer was acting as a private label
supplier who applied the WASTEMAID and Design mark at the
direction of Wilec Ltd., and to identify Wilec Ltd. as the
source of the products.
4. Opposer did not register WASTEMAID as a word mark
or logo in the United States even though it had registered
five other marks in the United States. In fact, Overseas
Operations, opposer’s exporter, had registered WASTEMAID and
Design for “kitchen waste disposers” in 1993. Because
opposer was knowledgeable and sophisticated enough to have
registered five other trademarks in the United States, in
addition to its aggressive foreign registration practice, it
is inconceivable that it would not have tried to register
the mark in the United States and/or that it was unaware of
the Overseas Operations registration. Opposer offered no
testimony to explain how and why Overseas Operations
registered the WASTEMAID and Design mark despite opposer’s
relationship with Overseas Operations and opposer’s current
claim to own the mark.
5. Opposer sold all of the WASTEMAID branded products
to Wilec Ltd. through Overseas Operations or applicant.
Opposition No. 91171906
34
After applicant acquired the WASTEMAID product line from
Wilec Ltd., opposer continued to sell the products to
applicant. Because opposer sold WASTEMAID garbage disposers
only to applicant, and because the WASTEMAID brand was a
private label for Wilec Ltd. and then applicant, the mark
does not identify opposer as the source of the products. In
other words, there is no association between the WASTEMAID
and Design mark and opposer as the source of the products in
the mind of the relevant consumers.
The representation agreements do not support opposer’s
argument that the paid commissions demonstrate opposer’s
ownership of the WASTEMAID and Design trademark. The
representation relationship between the parties was
memorialized in three representative agreements in 1993,
2002 and 2005.88 Paragraph No. 8 of the 1993 and 2002
representation agreements reads as follows:
[Opposer] may sell disposers to other
Original Equipment Manufacturers (OEM)
and private label users under their own
label for resale by said OEM’s and
private label users. OEM and private
label sales are not commissionable to
the [applicant].

Paragraph No. 10 of the 1993 and 2002 representation
agreements provides that applicant “will be paid a

88 Dugan Dep., Opposer’s Exhibit 1-3; Chavez Dep., Applicant’s
Exhibit 1 and Opposer’s Exhibit 1.
Opposition No. 91171906
35
commission for all orders shipped for [opposer] into
[applicant’s] territory” for specified models.
According to the agreements, opposer may sell products
to other original equipment manufacturers and private label
customers in applicant’s territory without having to pay a
commission to applicant. (Paragraph No. 8). However, if
applicant sells any models specified in the agreement within
its sales territory, applicant is entitled to sales
commissions. (Paragraph No. 10). The fact that opposer
paid applicant a sales commission on WASTEMAID branded
garbage disposers establishes that the WASTEMAID disposers
were models specified in Paragraph No. 10, and that the
sales were made by applicant, not opposer. In this regard,
Mr. Dugan testified that applicant was to receive
commissions for the sale of models identified in Paragraph
No. 10 regardless of the brand.89
Moreover, there is nothing in the representation
agreements regarding the ownership of any marks, including
the WASTEMAID and Design mark at issue in this proceeding.
The 1993 agreement provides, in relevant part, as follows:90
2. [Applicant] . . . is appointed the
Representative . . . for [opposer]
. . . for the following products in

89 Dugan Dep., p. 154.
90 The 2002 agreement is substantially the same. The difference
is in the description of products and channels of distribution in
paragraph No. 2. The differences are not relevant for our
purposes. The 2005 agreement is similar except that it is a
nonexclusive relationship.
Opposition No. 91171906
36
the indicated channels of
distribution:

Garbage disposers, instant hot
water dispensers in all
channels of distribution.

3. No other brands or products now
manufactured by [opposer] or that
may be manufactured in the future,
are included in this agreement. . .

* * *

6. [Applicant] herewith agrees to
diligently and actively pursue the
business interest of [opposer],
covering those products and lines
previously described, including,
but not limited to, calling on
distributors, retailers, direct
sales companies, construction
companies, plumbing wholesalers and
merchants. . . .

No brands were identified in any of the agreements.
With respect to the 1993 agreement, Mr. Dugan could not
explain the meaning of paragraph No. 3.
Q. Do you understand the
representation agreement in
Opposer’s Exhibit Number 1 [the
1993 agreement] to cover
[opposer’s]-owned brands only?

A. Owned brands?

Q. Brands that belong to [opposer]
only.

A. I don’t know.91

91 Dugan Dep., pp. 149-150.
Opposition No. 91171906
37
We were unable to glean any information from the
testimony regarding what marks were covered by the
representation agreements.92
Mr. Dugan testified that at trade shows opposer “would
be presenting either the SinkMaster line or the Waste King
line or the Whirlaway line or a combination.”93 In
addition, Mr. Dugan provided the following testimony:
Q. Can you identify for me all of the
marks that [opposer] would have
promoted - - or would have
promoted, I’m sorry - - at
[opposer’s] booth at these various
trade shows?

A. For our own product, product sold
in the United States, it would be
Waste King, Whirlaway, SinkMaster.

And if we were - - if Mr. Chavez
was not in the booth, he would
normally leave us with brochures.
And I am aware of us giving
brochures to individuals under the
WasteMaid mark, under the Commander
mark.94

Finally, Mr. Dugan testified regarding opposer’s
ownership of federal registrations for WASTE KING,
COMMANDER, SINKMATE, CLEAN-MASTER and SHRED-ALL for garbage
disposers.95 As referenced above, Overseas Operations was
the first to have registered the WASTEMAID and Design mark
in the United States. Thus, there is nothing in the

92 Dugan Dep., pp. 151-158.
93 Dugan Dep., p. 35.
94 Dugan Dep., p. 38.
95 Dugan Dep., pp. 42-45, Opposer’s Exhibits 8-13.
Opposition No. 91171906
38
representative agreements or opposer’s conduct that would
lead applicant (or us) to believe that opposer claimed that
it owned the WASTEMAID and Design trademark.
In none of the agreements between the parties were
there any express terms or implied understandings regarding
the ownership of the WASTEMAID trademark. In fact, an
examination of the agreements and a review of the testimony
regarding the agreements fail to shed any light on what
trademarks were supposed to be covered by them.
Finally, the fact that opposer’s trade name appears on
the product and its packaging is not the sine qua non of
trademark use.
[T]he fact that the name of the
manufacturer appears on labels for a
particular product does not conclusively
establish that the manufacturer rather
than the one for whom the goods are
produced is the owner of the mark
applied thereto.

Fort Howard Paper Co. v. Federated Foods, Inc., 189 USPQ
310, 314 (TTAB 1976), aff’d in part and rev’d in part on
other grounds, 544 F.2d 1098 (CCPA 1976). See also,
Morehouse Manufacturing Corporation v. J. Strickland & Co.,
150 USPQ 688, 692-693 (TTAB 1966), aff’d, 407 F.2d 881 (CCPA
1969) (“a trademark need not be used in association with the
trade name of its owner whether the owner personally
produces and sells the goods or they are produced and/or
Opposition No. 91171906
39
marketed to his benefit by a person or persons in privity
with him under a contractual agreement”).
The issue to be decided is what the mark conveys to
consumers, namely whether it indicates the source to be the
manufacturer (i.e., opposer) or the distributor (i.e., Wilec
Ltd. and applicant). See Amica Mutual Insurance Co. v. R.
H. Cosmetics Corp., 204 USPQ 155, 161 (TTAB 1979). In this
case, the record establishes that opposer is a private label
supplier for WASTEMAID and Design garbage disposers, that
opposer placed the mark on products at the direction of
others, and that opposer never used the mark to identify
itself as the source of the products (e.g., opposer only
sold the products to Wilec Ltd. through Overseas Operations
and applicant, both of whom understood that opposer applied
the mark as a private label supplier).
We find that opposer placed the mark on garbage
disposers as a private label supplier, not to identify
itself as the source of the products. Accordingly,
opposer’s private placement activities did not create an
association between the mark and opposer as the source of
the products. Therefore opposer’s affixation of the mark at
the direction of Wilec, and later applicant, did not
constitute trademark use on behalf of opposer. In view of
the foregoing, opposer has failed to prove that it has a
proprietary interest in the WASTEMAID and Design mark prior
Opposition No. 91171906
40
to applicant, and therefore opposer’s Section 2(d) claim of
likelihood of confusion fails.
Conclusion
Based on our review of all the evidence of record and
all the arguments made by the parties in their briefs,
including any evidence and arguments not specifically
discussed in the opinion, we conclude that, contingent upon
applicant’s registration of the mark, applicant has proven
that it has priority, that applicant had a bona fide intent
to use the mark in commerce when it filed the application,
and that applicant did not commit fraud on the U.S. Patent
and Trademark Office in filing and prosecuting its
application for registration. We have carefully considered
all of opposer’s arguments to the contrary, but we were not
persuaded thereby.
Decision: The opposition is dismissed, subject to the
Patent and Trademark Office issuing a notice of allowance,
applicant filing a statement of use, and the U.S. Patent and
Trademark office issuing applicant a certificate of
registration. The time for filing an appeal or for
commencing a civil action will run from date of this
decision. Trademark Rules 2.129(d) and 2.145. When
applicant’s mark has been registered or the application
becomes abandoned, the interested party should inform the
Opposition No. 91171906
41
Board so that appropriate action may be taken to terminate
this proceeding.